Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 13/10/2016

Markus Reinhardt

P.O. Box 11 65

D-83225 Aschau im Chiemgau

ALEMANIA

Application No:	015347503
Your reference:	AL-6618
Trade mark:	ROUTINELY UNIQUE
Mark type:	Word mark
Applicant:	SPC RESOURCES, INC. 125 W. Home Avenue Hartsville, SC 29550 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 28/04/2016 pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

For ease of reference, the contested goods and services are listed below:

Class 16 Packaging containers of paper.

Class 20 Packaging containers of plastic; Point of purchase displays.

Class 35 Supply chain management services.

Class 42 Packaging design.

The applicant submitted its observations on 27/05/2016, which may be summarised as follows:

• The mark ROUTINELY UNIQUE is a syntactically unusual and fanciful juxtaposition.

• It is neither descriptive or a laudatory message for the goods and services claimed.

• Consumers will perceive the expression ROUTINELY UNIQUE as a sign of trade origin.

• The expression is inherently contradictory. The combination of the terms applied for renders the mark distinctive and memorable.

• The mark is not commonly used in the relevant market.

• The mark has been accepted by the USPTO.

Pursuant to Article 75 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25).

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, §  42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20 ; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

Additionally, when assessing the distinctive character of a trade mark consisting of a combination of elements, the mark needs to be considered as a whole. However, that does not preclude prior examination of the trade mark’s individual features (judgment of 09/07/2003, T‑234/01, ‘Stihl’, § 32).

Consequently, the Office remains of the opinion that contrary to what the applicant says, the term ROUTINELY UNIQUE is indeed devoid of distinctive character in relation to the contested goods and services shown above.

The objectionable goods and services covered by the mark applied for are everyday consumption goods as well as specialised goods and services aimed both at average consumers and a professional public. In view of the nature of the goods and services in question, the awareness of the relevant public will be mainly high.

Moreover, since the mark ROUTINELY UNIQUE consists of English language words, the relevant public with reference to which the absolute ground for refusal must be examined is the English language-speaking consumer in the Community (judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’, § 26; and judgment of 27/11/2003, T-348/02, ‘Quick’, § 30).

Taken as a whole, the meaning of the term ROUTINELY UNIQUE is clear to any English-speaking consumer who will immediately and without any difficulty establish a direct and specific link between the mark and the goods and services in respect of which registration is sought. It is, therefore, the Office’s view that the term ROUTINELY UNIQUE is readily intelligible when taken in conjunction with the contested goods and services and viewed by the relevant consumer.

To reiterate, the Office remains of the opinion that taken as a whole, the words ROUTINELY UNIQUE would be perceived by the relevant public as a promotional laudatory message, the function of which is to merely communicate positive characteristics of the goods and services concerned.

Moreover, whilst accepting that a mark may be understood as both a promotional formula and an indication of commercial origin, in the present case the relevant public will not tend to perceive in the sign any particular indication of commercial origin beyond the promotional information conveyed, which merely serves to highlight positive aspects of the goods and services concerned, namely that they are distinct and exclusive as a matter of course (judgment of 21/01/2010, C-398/08 P, ‘Audi’, paragraph 45; an d judgment of 12/07/2012, C-311/11 P, ‘Smart Technologies’, § 34).

The Office considers that it has sufficiently justified the objection. The Office provided dictionary references in its original objection and examined the meaning of the expression in relation to the goods and services in question. As a result, the Office came to the conclusion that the words ROUTINELY UNIQUE consist exclusively of a meaningful expression easily understood by the relevant public, who will not perceive it as a trade mark but as promotional or advertising information indicating to the consumer the characteristics of the goods and services concerned, namely the relevant consumer will understand the words as a meaningful expression, on the basis that when used on the goods and services applied for, the mark ROUTINELY UNIQUE as a whole, directly informs, in a laudatory way, of the key characteristics of the goods and services, namely that that the goods and services concerned are distinct and exclusive as a matter of course. It is therefore considered highly improbable that the relevant public would fail to grasp the signs marketing/promotional message.

The argument that the expression ROUTINELY UNIQUE is not commonly used in the relevant market has no significance. It has to be put forward that where the Office finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods and services which are likely to be known by anyone and are in particular known by the consumers of those goods and services (see, by analogy, judgment of 22/06/2004, T-185/02, 'PICARO', paragraph 29). In such a case, the Office is not obliged to give examples of such practical experience (judgment of 15/03/2006, T-129/04, 'Develey', § 19).

It is on that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as a non-distinctive laudatory promotional/marketing statement and not as the trade mark of a particular manufacturer. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is for the applicant to provide specific and substantiated information to show that the trade mark sought has either an intrinsic distinctive character or a distinctive character acquired by usage, since it is much better placed to do so, given its thorough knowledge of the market (see judgment of 05/03/2003, T-194/01, 'Unilever', § 48).

Furthermore, there is no evidence to suggest that the relevant consumer in the area of the goods and services claimed would be particularly trade mark ‘educated’ or savvy and would instantly perceive ROUTINELY UNIQUE as a trade mark in relation to the contested goods and services rather than a non-distinctive promotional/marketing message in relation to the goods and services.

Since slogans primarily fulfil functions other than that of a trade mark in the traditional sense, these signs are only distinctive for the purposes of Article 7(1)(b) EUTMR if they may be perceived immediately as an indication of the commercial origin of the goods and services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin (see judgment of 05/12/2002, T-130/01, 'REAL PEOPLE, REAL SOLUTIONS', § 20 and judgment of 03/07/2003, T- 122/01, 'BEST BUY', § 21).

The Office is of the opinion, despite the applicant’s submissions, that there is nothing unusual about the structure of the sign. The words in the mark applied for are presented in a sequence that is intellectually meaningful. Therefore, there is no doubt that the relevant consumer will not perceive the words as anything other than a meaningful expression as it is not sufficiently unusual, ambiguous or fanciful to require a measure of interpretation, thought or analysis by the relevant consumer. It therefore remains the Office’s view that the term ROUTINELY UNIQUE is readily intelligible when taken in conjunction with the goods and services applied for and viewed by the relevant consumer.

Furthermore, there is nothing in the expression ROUTINELY UNIQUE that might, beyond its obvious promotional meaning, enable the relevant public to memorise it easily and instantly as a distinctive mark for the goods and services concerned. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its promotional sense.

Additionally, the fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods and services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods and services from those of a different commercial origin. (See judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, § 84).

Consequently, there is nothing in the expression ROUTINELY UNIQUE that might, beyond its obvious promotional meaning, enable the relevant public to memorise it easily and instantly as a distinctive mark for the goods and services at issue. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its promotional sense. As previously mentioned the expression applied for does not constitute a play on words and is not imaginative, surprising or unexpected. It is just an ordinary advertising message that possesses no particular resonance. It does not even have certain originality and resonance which makes it easy to remember (see decision of 23/06/2011, in R 1967/2010-2 – ‘INNOVATION FOR THE REAL WORLD’, § 26).

The Office emphases that the sign applied for is not rejected merely because it is a promotional slogan, but rather because it is a banal slogan with a clear and unambiguous laudatory meaning. It is important to recall that it is not the case that any promotional phrase, however descriptive or banal, can be registered as a trade mark, merely because it is presented in the form of an advertising slogan (see decision of 23/06/2011, R 1967/2010-2 – ‘INNOVATION FOR THE REAL WORLD’, § 27).

As regards to the applicant’s submissions that the mark has already been accepted at the USPTO it has to be put forward that the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national/international system. Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national/international mark (See judgment of 27/02/2002, T 106/00, ‘STREAMSERVE’, paragraph 47).

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 15 347 503 is hereby rejected for all the goods and services claimed.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

Sam CONGREVE